DCT

2:21-cv-04423

Synkloud Tech LLC v. Cartessa Aesthetics LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:21-cv-04423, E.D.N.Y., 03/06/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of New York because Defendant is incorporated in New York and maintains its principal place of business within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s radio frequency microneedling devices infringe five patents related to methods and apparatuses for dermatological skin treatment.
  • Technical Context: The technology concerns aesthetic medical devices that use an array of microneedles to deliver radio frequency energy directly into the dermis for skin tightening and rejuvenation.
  • Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of the patents-in-suit via notice letters, with the earliest notice for two of the patents dating to February 9, 2018. Subsequent letters regarding all five patents were allegedly sent in April 2021. This action was initiated via a Second Amended Complaint. A recent disclaimer filed by the assignee, Serendia LLC, on May 13, 2024, disclaimed several claims of the ’812 Patent, including independent claims 1, 12, 17, 19, and 20.

Case Timeline

Date Event
2008-08-06 Earliest Priority Date for ’536, ’774, ’812 Patents
2011-06-14 Earliest Priority Date for ’836, ’379 Patents
2016-04-26 U.S. Patent No. 9,320,536 Issues
2016-11-01 U.S. Patent No. 9,480,836 Issues
2017-10-03 U.S. Patent No. 9,775,774 Issues
2018-02-09 Defendant allegedly made aware of ’536 and ’836 patents
2018-08-28 U.S. Patent No. 10,058,379 Issues
2020-12-22 U.S. Patent No. 10,869,812 Issues
2021-04-22 Defendant allegedly receives follow-up notice of ’536, ’836, ’379, and ’812 patents
2021-04-23 Defendant allegedly made aware of ’774 patent
2023-03-06 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,320,536 - "Method, System, and Apparatus for Dermatological Treatment"

The Invention Explained

  • Problem Addressed: The complaint asserts that at the time of the invention, methods for radio frequency (RF) skin tightening suffered from key drawbacks: indirect energy application was ineffective, monopolar needles posed risks to internal organs, and early bipolar microneedle systems caused significant burning and pain to the epidermis (the outer layer of skin) (Compl. ¶¶11-13).
  • The Patented Solution: The invention claims a system comprising a hand-held device and a disposable, "releasably couplable" needle cartridge (Compl. ¶¶20-21; ’536 Patent, col. 11:46-54). A motor within the device deploys the needles into the skin, and a generator delivers electrical signals to the needles to treat the underlying tissue, such as the dermis, while the mechanical and electrical connections between the handpiece and cartridge are maintained (’536 Patent, col. 11:55-66). This approach is intended to create micro-wounds that can improve the absorption of topical treatments (’536 Patent, col. 4:35-39).
  • Technical Importance: The claimed invention sought to provide a safer and more effective dermatological treatment by enabling precise, repeatable needle deployment and energy delivery via a disposable cartridge system (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent claim 11 and dependent claims 12, 14, 16, and 19 (Compl. ¶21).
  • Independent Claim 11 includes the following essential elements:
    • A user holdable device with a proximal end and a releasably couplable deployable needle module.
    • The needle module is mechanically separable from the proximal end and includes a plurality of extendable needles.
    • An electrical connection is maintained between the device and the needle module via at least one "restorably deflectable electrical contact."
    • A motor is coupled to the needle assembly to extend the needles a desired distance.
    • A signal generator is electrically coupled to the needles to energize them.

U.S. Patent No. 9,480,836 - "Skin Treatment Apparatus and Method"

The Invention Explained

  • Problem Addressed: The patent's background describes how prior art bipolar RF microneedle systems could cause overheating and burning of both the dermis and the epidermis "located between needles," leading to permanent skin damage (’836 Patent, col. 4:8-12; Compl. ¶13). Insulating the needles to mitigate this could cause other issues, such as pain and potential side effects from insulation depositing in the skin (’836 Patent, col. 4:22-27).
  • The Patented Solution: The patent claims an apparatus that applies an Alternating Current (AC) RF signal to bipolar electrodes (needles) in a way that is "configured to cause coagulation around each electrode rather than coagulating between the electrodes" (’836 Patent, cl. 1). This is described as a "newly discovered effect" where each needle independently forms an energy field about its tip, concentrating the thermal effect in the dermis immediately surrounding each needle while minimizing heat in the epidermis between the needles (’836 Patent, col. 3:15-16, col. 4:58-64, Fig. 5).
  • Technical Importance: This approach allows for the use of non-insulated needles, which may improve treatment effectiveness, while reducing the risk of epidermal burns and associated pain that plagued earlier bipolar systems (Compl. ¶14; ’836 Patent, col. 3:39-45).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 3, 4, 6, 7, 8, 9, and 12 (Compl. ¶34).
  • Independent Claim 1 includes the following essential elements:
    • A plurality of electrodes that are bipolar and configured to be inserted into skin.
    • A radio frequency (RF) generation module electrically coupled to the electrodes.
    • The module is configured to provide an Alternating Current (AC) RF signal to the electrodes.
    • The signal is configured to cause coagulation "around each electrode rather than coagulating between the electrodes."

U.S. Patent No. 9,775,774 - "Method, System, and Apparatus for Dermatological Treatment"

  • Technology Synopsis: Continuing from the ’536 Patent, this patent further details the mechanical and electrical interface for a dermatological device with a disposable needle cartridge. The claims focus on the structural elements that allow the cartridge to be releasably coupled to a handpiece, enabling a motor to deploy the needles while maintaining electrical contact for RF energy delivery (’774 Patent, Abstract).
  • Asserted Claims: Independent claim 11 and dependent claims 12, 13, 14, 15, and 18 (Compl. ¶47).
  • Accused Features: The complaint accuses the Virtue RF microneedling device of infringement (Compl. ¶46).

U.S. Patent No. 10,058,379 - "Electrically Based Medical Treatment Device and Method"

  • Technology Synopsis: Continuing from the ’836 Patent, this patent claims a device and method for applying an RF signal with an oscillating current to bipolar electrodes. The core inventive concept remains applying energy to create heated treatment zones "around each electrode rather than to body segments between the electrodes," which is described as forming an "oval shaped" energy field at the needle tip to treat the dermis while sparing the epidermis (’379 Patent, Abstract; col. 11:6-9).
  • Asserted Claims: Independent claim 1 and dependent claims 2, 3, 4, 6, and 8 (Compl. ¶60).
  • Accused Features: The complaint accuses the Vivace RF microneedling device of infringement (Compl. ¶59).

U.S. Patent No. 10,869,812 - "Method, System, and Apparatus for Dermatological Treatment"

  • Technology Synopsis: This patent is also part of the family including the ’536 and ’774 patents, focusing on a system with a reusable handpiece and a disposable "releasably couplable deployable needle module." The claims describe an apparatus where the needle assembly is movable to extend from the module's end surface while at least one electrical contact remains coupled to the handpiece, ensuring continuous power delivery during needle deployment (’812 Patent, cl. 12).
  • Asserted Claims: Independent claim 12 and dependent claims 13, 14, 15, 16, 17, and 18 (Compl. ¶73).
  • Accused Features: The complaint accuses the Vivace and Virtue RF microneedling devices of infringement (Compl. ¶72).

III. The Accused Instrumentality

Product Identification

  • The Vivace RF microneedling device and the Virtue RF microneedling device (Compl. ¶¶20, 46, 72).

Functionality and Market Context

  • The complaint identifies the accused products as "radio frequency microneedling devices" used for aesthetic dermatological treatment for tightening skin (Compl. ¶¶10, 20). It alleges that Defendant Cartessa competes directly with Plaintiff Serendia in this market segment (Compl. ¶16).
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references but does not include claim chart exhibits. The infringement theory is therefore summarized below in prose.

  • '536 Patent Infringement Allegations: The complaint alleges that the Vivace and Virtue devices meet the limitations of claim 11. The theory suggests the devices are "user holdable" handpieces that operate with disposable needle cartridges, which correspond to the claimed "releasably couplable deployable needle module." It further alleges these devices use an internal motor to extend the needles from the cartridge into the skin and an RF generator to apply energy to the needles, thereby practicing the claimed method and system (Compl. ¶¶20-21).

  • '836 Patent Infringement Allegations: The complaint alleges the Vivace device infringes claim 1. The infringement theory posits that the device functions as the claimed apparatus by using "bipolar" microneedles and an "RF generation module." Crucially, the complaint alleges the device provides a signal configured to "cause coagulation around each electrode rather than coagulating between the electrodes," thereby mirroring the central functional limitation of the claim (Compl. ¶¶33-34).

V. Key Claim Terms for Construction

  • The Term: "coagulation around each electrode rather than coagulating between the electrodes" (from ’836 Patent, cl. 1; ’379 Patent, cl. 1).

  • Context and Importance: This phrase is the technological core of the ’836 and ’379 patents, distinguishing the invention from prior art that allegedly heated the tissue between needles and caused epidermal burns. The outcome of the infringement analysis for these patents may depend entirely on whether the accused devices are proven to function in this specific manner.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent describes this as a "newly discovered effect[]," which may support a construction focused on the functional result of localized heating, regardless of the precise mechanism (’836 Patent, col. 3:15-16).
    • Evidence for a Narrower Interpretation: The specification links this effect to specific enabling disclosures, including the use of AC signals where "each needle may independently form an energy field about its tip" and particular polarity arrangements between adjacent needles (’836 Patent, col. 4:58-64, Fig. 6). A defendant may argue the claim scope is limited to systems exhibiting these specific characteristics, raising the question of whether the accused devices' energy fields are truly independent or if there is material interaction between them.

  • The Term: "releasably couplable deployable needle module" (from ’536 Patent, cl. 11; ’812 Patent, cl. 12).

  • Context and Importance: This term defines the structural nature of the disposable cartridge. Practitioners may focus on this term because the dispute may involve whether the specific mechanical and electrical coupling mechanisms of the accused products' cartridges fall within the scope of the patent's claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain language of the claim suggests any needle module that can be attached, detached, and has deployable needles could be covered.
    • Evidence for a Narrower Interpretation: The specification provides detailed figures illustrating a specific coupling mechanism involving deflecting tabs and coupling arms that engage with recesses on the handpiece (’536 Patent, Figs. 9C-10D, col. 12:1-51). A defendant could argue that these embodiments define the scope of the term and that a different coupling design, such as a simple screw-on or magnetic attachment, would not infringe.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all five asserted patents. Inducement is based on allegations that Cartessa distributes the accused devices and provides "demonstrative and informational webinars" with the specific intent to encourage infringing use by customers (Compl. ¶¶23-25, 36-38, 49-51, 62-64, 75-77). Contributory infringement is based on allegations that the accused devices are material components specifically adapted for infringing use and are not staple articles of commerce (Compl. ¶¶26, 39, 52, 65, 78).
  • Willful Infringement: Willfulness is alleged for all five patents. The basis for these allegations is Defendant’s alleged pre-suit knowledge of the patents and their infringement, stemming from notice letters Plaintiff claims to have sent on February 9, 2018, and in April 2021 (Compl. ¶¶22, 27, 35, 40, 48, 53, 61, 66, 74, 79).

VII. Analyst’s Conclusion: Key Questions for the Case

This case appears to center on fundamental questions of technological operation and structural scope. The key issues for the court will likely include:

  • A core issue will be one of functional operation: what evidence will demonstrate whether the accused Vivace and Virtue devices generate RF energy fields that cause coagulation primarily around each individual electrode, as claimed in the ’836 and ’379 patents, or if they operate more like prior art systems by causing significant coagulation in the tissue between the electrodes?
  • A second key issue will be one of structural scope: does the mechanism for attaching and operating the disposable needle cartridges in the accused products meet the specific limitations of a "releasably couplable deployable needle module" with its associated electrical contacts, as defined by the claims and detailed embodiments of the ’536, ’774, and ’812 patents? The analysis may turn on the degree of structural and functional similarity between the accused devices and the patented designs.